The Alberta rock band named Jr. Gone Wild has been in the news after Alberta’s Department of Culture ordered it to stop using a modified version of the province’s official emblem as part of the band’s logo. A photo of the band’s logo can be viewed along with the Edmonton Journal article on this issue.

A law titled the Emblems of Alberta Act makes it an offence to use “for commercial or business purposes” the armorial bearings of Alberta without consent. It is also an offence to use “any design so nearly resembling the armorial bearings of Alberta or any portion of them as to be calculated to deceive”. Although the band is using the arms for commercial purposes (it is selling T-Shirts emblazoned with its logo), it is not clear that this use of the modified design is calculated to deceive anyone. It remains an open question whether anyone viewing the logo would be led to believe that the band is in any way the official rock band of Alberta.

The Minister of Culture has also enacted regulations governing official emblems. According to these regulations, the emblem can be reproduced, used or displayed for non-commercial purposes so long as the use or display is in good taste.Commercial use is also permitted under certain conditions. These are that the use:

(a) is free from any implication that the commercial or business purposes have any approval or accreditation from the Government,

(b) is based on original drawings obtained from the Government, and

(c) conforms, in the opinion of the Minister, to good taste.

The regulations are not clear about whether a modified version of the emblem can be used at all. For example, it is not clear whether the “good taste” requirement relates to modifications, or simply to the context in which the emblem is to be used.According to the story in the Edmonton Journal, it is not yet clear whether the band will change its logo and dispose of its unsold merchandise, or whether it will disregard the Minister’s order.

It is not unusual for governments to pass laws to protect their official emblems and insignia. For example there are similar statutes in Saskatchewan (with much stiffer penalties), and in Manitoba. There is certainly a public interest in ensuring that people are not misled into believing that certain products or services have been offered or endorsed by the government when they have not. Provincial arms, crests and flags are also listed as prohibited marks under s. 9(1)(e) of the Trade-marks Act. This means that these marks, or ones “so nearly resembling as to be likely to be mistaken” for them may not be adopted or used “in connection with a business, as a trade-mark or otherwise”. Thus there is ample law to protect against misuse of these signs or symbols.

The question is, of course, what the limits of freedom of expression are when it comes to the insignia of government, or other public symbols. According to the report in the Edmonton Journal, the band sees itself as “just doing art”. Artistic expression is, of course, protected expression in Canada. Yet like other of Canada’s civil liberties, it is subject to “reasonable limits demonstrably justified in a free and democratic society.

The Royal Canadian Mint recently backed down from a demand for licensing fees from a musician who used images of the penny on his album cover. There was also considerable controversy in Nova Scotia in the mid-2000’s when a company charged with the maintenance and operation of the Bluenose II began demanding licensing fees from local businesses who used the name or image of the iconic schooner. Of course, in each of these cases it was the symbol or name itself that was used, and not a modified version. And, while iconic, the penny and the Bluenose are not official insignia of government. The question remains as to how the balance should be struck between the public interest in the protection of official arms and insignia and the public interest in the freedom to use these insignia as a vehicle for expression.

With little fanfare, the Canadian government has released its much awaited, newly revised Open Government Licence.The previous version that had been available on its Open Data site was a beta version on which public comments were invited. The government has also published its Open Government Licence Consultation Report, which summarizes and discusses the comments received during the consultation process.

The revised version of the licence is an improvement over its predecessor. Gone is the claim to database rights which do not exist in Canada. (These rights do exist in the UK, the Open Government Licence of which was a template for the Canadian licence). The new licence also discards the UK term “personal data” and replaces it with “personal information”, and it gives this term the meaning ascribed under the federal Privacy Act. The language used in the licence has been further simplified, making it even more accessible.

It should be noted that Alberta’s new open government licence – released as part of the launch of its open government portal earlier this year – is very similar to V2.0 of the federal government licence. There are some minor formatting differences, and a few changes in wording, most of which can be explained by the different jurisdiction (for example, the definition of “personal information” refers to Alberta’s Freedom of Information and Protection of Privacy Act). The similarities between the two licences are no coincidence. Although the Alberta licence was made public prior to the release of the federal government’s V2.0, work has been going on behind the scenes to move towards some form of federal/provincial consensus on the wording of open government licences with a view to ensuring that there is legal interoperability between data sets released by different governments in Canada. The efforts to reduce barriers to interoperability (whether legal or technical) are important to the ability of Canadians to work with and to integrate different data sets in new and innovative ways. Thus not only is the COGL V2.0 to be welcomed, so are the signs that cooperation and coordination may lead to a greater legal interoperability of open government licences across Canada.

Is it “legal” to post your fan fiction tribute to Star Trek online? Or to post a video of your children cavorting to a pop song? The recent amendments to Canada’s Copyright Act have, among other things, added an exception to the basic rules of infringement for user-generated content (UGC). According to this exception, user-generated content is some form of work (literary, artistic, dramatic or musical) that would be eligible for copyright protection in its own right, and that is built upon or integrates the copyright protected work of another. This would clearly seem to cover both of the examples given above. Recognizing that individuals now interact with digital works for all kinds of private and expressive purposes, the federal government has moved these activities from the realm of copyright infringement, and legitimized them – so long as the resultant UGC is non-commercial and has no substantial adverse effect (financial or otherwise) on the original.

The UGC exception is not the only new exception in the Act to normalize activities which, prior to the amendments, were considered infringing. For example, it used to be an infringement of copyright in Canada to record television shows to watch at a later time, and to make copies of legally acquired works so that they could be stored in electronic form, put on an MP3 player, or used for some other private purpose. These were activities in which Canadians routinely engaged, and sensibly, new exceptions now render them non-infringing. The UGC exception is also not the only new exception to carve out more room for expressive interactions with works. The fair dealing provision, which used to apply only to the fair use of works for the purposes of research, private study, criticism, comment or news reporting, now also permits the fair use of works for the purposes of education, parody or satire. The UGC exception thus fits within a framework of exceptions that normalize how people commonly interact with works and that encourage creative engagement with works – within certain limits.

During the debates on the amendments to the Copyright Act, the UGC exception was referred to as the “You Tube” exception, because it seemed that the paradigmatic act contemplated by this section was the home video posted on You Tube that incidentally incorporated a popular song. Yet the exception has potentially enormous breadth: there are so many ways in which existing copyright works can be incorporated into new works. The exception permits not just the making of these ‘mashups’, it permits the non-commercial dissemination of the new work. Translations and adaptations of existing works would appear to meet the definition of UGC. Compilations (mix tapes, anthologies, etc) would also seem to qualify. Those who create maps using the data sets of others and post them online may also find comfort in the UGC exception. Perhaps unwittingly, this exception appears to give great scope for the creation and distribution of works based upon the work of others. Of course, other than being non-commercial, the dissemination must not have no substantial adverse effect (financial or otherwise) on the work(s) incorporated into the UGC – it remains to be seen how much limiting effect these ‘weasel words’ will have.

If there is any need for further evidence that the official marks provision in s. 9(1)(n)(iii) of the Trade-marks Act is in dire need of reform, then it can be found in the advertisement by Canada Post in 2005 of official marks in the words POSTAL CODE and CODE POSTAL.

Official marks are a special species of trademark available only to “public authorities.” In theory, a public authority is an entity that is under the control of a federal or provincial government and that acts for the public benefit. While a regular business would have to choose a trademark that does not create confusion with existing registered trademarks, a public authority can pick pretty much any mark it chooses. Further, unlike other businesses, public authorities can choose marks that are generic or descriptive. The adoption of “POSTAL CODE” and “CODE POSTAL” is a case in point. These words are generic: there really are no other words to describe the thing to which they refer – the postal code.

Public authorities also enjoy substantial procedural advantages when it comes to official marks:there is no opposition proceeding for official marks, there is no examination, and there are no registration fees. Once a public authority asks the Registrar to advertise an official mark (and has demonstrated that the mark has been adopted and used) the mark is protected. No one else may adopt, use or register the same mark, or one closely resembling it. Once advertised, such marks live on until voluntarily withdrawn, or removed from the register as a result of costly legal proceedings. For an example of the dysfunction of official marks, consider the fact that both the province of Nova Scotia (no doubt a public authority) and the Bluenose II Preservation Trust Society (almost certainly not a public authority) currently have the identical official mark BLUENOSE on the trademark register.

Official marks have a long history of abuse. The Federal Court has been kept busy trying to establish some standards for official marks – these are entirely absent from the legislation. Thus the court has established a test to aid in determining who qualifies as a “public authority”, has determined that public authorities must be Canadian, and has also set a test to determine whether certain official marks have been adopted and used by the public authority seeking to monopolize them. While the court has done its best, the entire system is flawed and is desperately in need of review.

This brings us back to POSTAL CODE. Canada Post, a public authority, has claimed official mark status for the very words in French and English that describe that series of numbers and letters that form a part of each address for mail delivery purposes. There is no obvious need for Canada Post to monopolize this term. There is no obvious public interest in having it monopolized. Yet ongoing litigation between Canada Post and Canadian company Geolytica suggests that Canada Post may be attempting to use a monopoly in the term POSTAL CODE/CODE POSTAL to make it more difficult for others to compete with it in the area of postal code related products or services. Geolytica, which offers a free online postal code look-up directory and other for-fee services through its Geocoder website is being sued by Canada Post for copyright infringement, and – surprise, surprise – for infringement of its official marks.

The recent report of the House of Commons Standing Committee on Industry, Science and Technology on the Intellectual Property Regime in Canada recommends amendments to the Trade-marks Act to narrow the definition of public authorities to help prevent abuse of official marks “to avoid stifling innovation and distorting markets”. Yet it is important to keep in mind that the problem is not just with those who wrongly claim to be public authorities. Actual public authorities might also use official marks to stifle innovation and distort markets – arguably this is what is happening with the POSTAL CODE/CODE POSTAL mark. Perhaps the reform of the official marks provision needs to be even more profound. Abolishing the category of official marks is a policy option that would require public authorities to play by the same trademark rules as all other businesses. With this as the default position – and with, perhaps, some clear exceptions for the names of government agencies or departments – we might finally see an end to the abuse of official marks.

A recent Federal Court of Appeal decision may have significant implications for the licensing of government data by federal and provincial governments. Nautical Data International Inc v. C-Map USA Inc. is a decision that relates to a lawsuit brought by Nautical Data against the defendant C-Map after C-Map allegedly used data from Canadian Hydrographic Service charts and maps to create its digital charts. Nautical Data took the position that it had acquired the rights, through an exclusive licence, to the raw data that was used in the preparation of the charts, and that these rights were infringed by C-Maps activities. Of course, the two parties were competing in the production of digital navigation products.

Typically, government data licences, whether open or otherwise, assert that the government has rights in the data being licensed. Even the federal government’s recently proposed Open Data Licence covers information that is defined as “information protected by copyright or by database right...”. Leaving aside the imported and inappropriate reference to database rights that do not exist in Canada (see my earlier blog on this point), the government is clearly assuming that it has copyright in the data that is the subject of such licenses. Geobase’s Unrestricted Use Licence Agreement also boldly asserts that “Canada is the owner of or has rights in the data (the Data) addressed by the terms and conditions of this Agreement”. The claims, evident in these open licences, are repeated in more closed licences as well. The licence at issue in the Nautical Data case defined CHS data as “any data owned by Canada and maintained by CHS”.

This idea that data can be “owned” and that copyright law is the vehicle for this ownership is clearly evident in these and in many other licences in both the private and public sectors. This is the case, notwithstanding the fact that in copyright law, there can be no monopoly in facts or data. Copyright will only protect an original expression of facts or data. In a compilation of data, that expression will be manifest in an original selection or arrangement of the data. Even if there is an original selection or arrangement, the protection extends only to that selection or arrangement; it never extends to the underlying data.

While copyright academics have made this point before, it has largely fallen on deaf ears. That is why the comments by the Federal Court of Appeal on this point are so interesting. While the decision is not on the merits of the case (the litigation was about whether summary judgment should be rendered on the issues; the court ruled was that it should not – that the matter should proceed to trial) Justices Nadon and Sharlow state quite plainly that “there can be no copyright in information.”(at para 11). Moreover, they express a certain surprise at the wording of the licence.They state:

Section 6.1 is intended to be a formal acknowledgement of Crown copyright, but it refers to copyright in the CHS Data.Either the parties were unaware that copyright could not subsist in information (which we would not presume), or they understood the phrase “CHS Data” by necessary implication to mean or at least include the CHS Works, even though the definition of “CHS Data” in the licence seems to limit its meaning to “data”. (at para 13)

This is perhaps one of the politest ways possible to criticize the drafting of the licence. Justices Nadon and Sharlow go on to note that the allegation in the licence that the Crown “owns” the data is similarly troublesome. They state: “If it is intended to mean that data can be owned in the same way as property can be owned, then there is some question as to whether it is correct as a matter of law. . . . there is no principle of property law that would preclude anyone from making use of information displayed in a publicly available paper nautical chart, even if the information originated with the Crown or is maintained by the Crown.” (at para 14)

These statements are both interesting and important, and direct attention towards the rather thorny issues around the protection of data in Canada. Data producers, whether in the public or private sectors, have asserted claims to copyright in their data that are far stronger than the law apparently supports. They can do this largely because to challenge such a claim would require engaging in costly and time-consuming litigation which is beyond the reach of ordinary citizens and many businesses as well. It is perhaps the law’s version of Stephen Colbert’s ‘wikiality’ – let’s call it legiality: if you can get enough people to say that certain rights exist, then perhaps for all intents and purposes they do.

Although the copyright issues are not fully litigated in this installment of the Nautical Data saga, the statements by Justices Nadon and Sharlow are a jurisprudential shot across the bows (if you will forgive the nautical reference) of those who claim excessive rights to data in copyright licenses. Whether it is the Nautical Data case that will eventually provide the clarification of the law on these issues or other cases that may be working their way through the system, it really is time for our courts to reinforce the Federal Court of Appeal's clear message regarding over-claiming data licences: there simply is no copyright in facts.

The legendary Bluenose schooner has become a Nova Scotian – if not a national – icon. It has been featured on our dime since 1937. While the ship is invoked in stories and songs (the original Bluenose sank in 1946), it also lives on in a physical replica, the Bluenose II, which tours Nova Scotia and abroad, and which is a popular attraction.The ship took its name from the term “bluenose” which has been used as a nickname for Nova Scotians since at least the 1700s.

Being an icon is not an easy thing – even for a ship. In fact, the Bluenose has been the subject of a number of intellectual property skirmishes in recent years, and is set to be the focus of yet another round of litigation. The first round of intellectual property battles took place in the early 2000’s, when the company retained by the Nova Scotia government to maintain and manage the Bluenose II (which belongs to the province) received official marks protection for the name Bluenose II and a number of related marks. It then sought to enforce its newfound trademark rights against a number of local businesses that used the word Bluenose in their name. An account of this litigation and its outcome can be found in an article I published in the Dalhousie Law Journal in 2004.

Now, in 2013, the heirs to the naval architect who designed the original Bluenose schooner have filed an application in the Nova Scotia Supreme Court, arguing that the Province of Nova Scotia and those it hired to restore the Bluenose II have violated the copyright in the naval architectural plans for the ship. It is also argued that the moral rights of the naval architect, the late William James Roué have also been violated. Because Mr. Roué passed away in 1970, the copyright in the plans would only expire in 2020.

To understand this argument, it is first necessary to know that the naval architectural plans would constitute drawings, which in turn are protected as artistic works under the Copyright Act. Case law establishes that the copyright in drawings can be infringed when someone builds a three-dimensional object from what is represented in the drawing. Thus the building of a house may infringe the copyright in a set of architectural plans, and the building of a ship, presumably, can also infringe the copyright in its naval architectural drawings.Although the province claims that the work done on the Bluenose II (which was by all accounts in a sad state) was a restoration of an existing, authorized reproduction. The heirs of William J. Roué, by contrast, argue that the existing ship was reverse-engineered; new drawings were done, and an infringing copy of the ship was built. This is the heart of the copyright claim, and it raises interesting issues about the boundary lines between restoration and replication.

Moral rights are intended to protect the honour and integrity of the creator of a work and to ensure that he or she is recognized as the author of the work. The heirs appear to argue that the work done on the Bluenose II amounted to the distortion or mutilation of the copyright protected work to the prejudice of the honour or reputation of William J. Roué. In part, it seems that the heirs are arguing that they should have been involved or consulted in the process in order to protect moral rights, arguing that the prejudice to honour or reputation flows from the fact that “the Applicants are unable to ensure that construction of the Vessel will be completed properly and that the vessel called “Bluenose II” will remain an authentic tribute to the original Bluenose and Bluenose II and the creator of the legacy.” (Second Amended Notice of Application, Schedule A, para 37.) The outcome of this claim may depend upon whether the project is considered a restoration or a reconstruction. The Copyright Act provides that “steps taken in good faith to restore or preserve a work” are not, of themselves, a distortion, mutilation or modification of the work (s. 28.2(3)(b)).

There is, of course, money involved in this dispute. The government did not seek permission to use the copyright protected drawings to produce a new replica of the Bluenose, nor did it pay royalties to the copyright holders – their position is that they are simply restoring the ship that they own. The heirs, by contrast argue that they have “suffered a lost opportunity. . . to financially benefit from exploitation of the Copyright Work”. (Second Amended Notice of Application, Schedule A, para 44).

For its part, the Government of Nova Scotia has challenged the existence of copyright in the naval architectural plans, and whether such copyright actually passed to the applicant heirs. They are also arguing that the “restoration” of the Bluenose II “is not a substantial reproduction of the Bluenose; it is an independent design” (para 17 of the decision on the motion). Finally, the government seems to be arguing that any copyright in the naval architectural drawings does not include rights in the name “Bluenose”. Presumably this means that they assert the right to give this name to any ship they build.

It will be interesting to see how this litigation unfolds. The conflict here perhaps reflects what happens when someone’s intellectual property underlies what has become a public icon, and when the owner of a physical and functional object – like a ship – feels that they should not be constrained by intellectual property laws in their dealings with that object.

Roberta Bell of the Orillia Packet and Times has reported on an art exhibit that was pulled by a local art gallery after concerns were raised about possible copyright infringement. The situation highlights competing public policy concerns.

The artist in question, K.D. Neely, had digitally enhanced a series of photographs she had taken of graffiti from the Raval district in Barcelona. This is not the first time such an issue has arisen in Canada. Similar copyright concerns led to the closing of another exhibit of photographs of graffiti at a Toronto Gallery in 2008.

There is no question that graffiti may constitute an “artistic work” within the meaning of the Copyright Act. It is an interesting and open question whether copyright can be enforced in illegal works, but not all graffiti is illegal. Many such works are commissioned by building owners or municipalities, for example.

The owner of copyright in a graffiti artwork, like any other copyright owner, has a series of rights under the Act which include the right to reproduce or authorize the reproduction of their work. Taking a photograph of all or a substantial part of a graffiti artwork is a reproduction under copyright law. Further, an artist has certain moral rights in relation to their work. These would include the right to be associated with their work by name or pseudonym, or to remain anonymous. The moral right of integrity protects the artist against any distortion, modification, or mutilation of their work to the prejudice of their honour or reputation. In the case of a painting, the prejudice is deemed to have occurred as a result of any mutilation or modification. A photograph that presents only part of a graffiti work, or that adds elements to it might therefore violate the artist’s right of integrity.

Of course, a photographer whose photographs do more than simply reproduce the work of another would also have copyright in their own works. A photographer who makes choices as to what parts of a graffiti work to include in her photo, or how to include other aspects of the urban landscape, for example, is creating a new, copyright protected work. However, it is well established that an artist (or a writer, or musician) cannot incorporate the copyright protected works of others into their own works unless they have permission to do so, or unless they can rely upon a fair dealing defence.The fact that a new work is created is not, on its own, a defence to copyright infringement. Musicians who engage in sampling and appropriation artists have railed against these restrictions on how they create their own works, but copyright law has remained, by and large, unyielding in the face of these arguments. One of the public policy issues raised by this case, therefore, is whether the law gives appropriate latitude to creators to draw upon the works of others in the creation of their own works. When does a new work sufficiently transform the work on which it is based so as to be free from the need to seek permission to use the earlier work?

In Canada, the fair dealing defence to copyright infringement is available only where works are used for certain purposes. These are: research or private study, criticism or comment, news reporting, parody or satire, and education. In addition to being used for one of the specified purposes, any dealing with the work must be fair. The amount of the work used, and the impact of the dealing on the original are both factors that are taken into account in assessing fair dealing. Fair dealing is thus a very context-specific defence, and in many cases it will be frankly rather difficult to know whether a person’s dealing with a work was fair without engaging in costly litigation. There is no general exception to infringement based on arguments that a new work has been created.

Section 32.2 of the Copyright Act sets out a series of “permitted acts” in relation to copyright protected works. In paragraph 32.2(2)(b), the law provides that it is not copyright infringement to “reproduce, in a painting, drawing, engraving, photograph or cinematographic work” either an architectural work or a sculpture that is permanently situated in a public place or building.The provision clearly aims to establish a balance between the rights of copyright holders and the rights of individuals to occupy and relate to the public spaces around them. In other words, if your art work is in a public place, you have to accept that it will be treated as part of the landscape in photographs and other artworks. This is the case whether photos are taken by tourists, artists, or by photographers who sell their works for postcards or calendars.

What the drafters of s. 32.2(2)(b) omitted to address, however, was the issue of paintings that are situated in public spaces. Indeed, graffiti is very much a part of public landscapes. However, it would seem that unlike sculptures in parks or city squares, it cannot be photographed with impunity. This clearly seems to be a gap in the law. Why should graffiti artists be put in a better position than architects or sculptors when it comes to their rights in relation to their works? Why should anyone be inhibited in the taking of photographs of urban streetscapes that contain graffiti?

One answer to these questions might be that graffiti artists are in a different position than architects and sculptors, who are often paid handsomely for their contributions to public space. Although some works of graffiti are commissioned, many are not, and graffiti artists might well object to the capture of their works in photographs that are sold in galleries or reproduced for sale in other contexts without their permission and without compensation. The position is certainly understandable, yet it is also important to keep our public spaces as public as possible. Layering our streetscapes with private rights is almost certainly not in the broader public interest. Yet barring a change in the law or a surprising court interpretation of fair dealing in the context of photos of graffiti, this would seem to be our current situation.

The U.S. Court of Appeals for the Eleventh Circuit recently issued an interesting opinion that addresses the issue of whether trademarks can be reproduced without permission in artistic works.In The University of Alabama Board of Trustees v. New Life Art, Inc. & Daniel A. Moore, the University of Alabama sued a well known artist who had built his career around paintings featuring the University’s famous Crimson Tide football team.The paintings inevitably feature a number of the University’s trademarks, including logos on helmets and jerseys and the team’s signature colours. The well-known artist sold not only his paintings, but also prints, calendars, mugs and other items featuring reproductions of his works.

Moore painted football scenes from 1979 to 1990 without entering into any kind of agreement with the University of Alabama. In the period between 1991 and 1999 he entered into several different licence agreements for the production and marketing of specific items that would feature both his artistic works and additional University of Alabama trademarks. These products would bear markings indicating they were “official” merchandise, and proceeds of sale were shared with the university. During this period Moore continued to create paintings independent of any licence agreement. The university never asked him to pay royalties or otherwise seek permission for the sale of any paintings or prints of his work.

In 2002, the University changed its position with respect to Moore’s work, and informed him that he would need a licence for any University of Alabama-related works that featured University trademarks. Moore disagreed and did not seek licences for his paintings and prints. The University bookstore sold unlicensed calendars featuring Moore’s work during this period. It also had several of Moore’s unlicensed paintings hanging at different locations on campus. The disagreement eventually blossomed into litigation; the University sued Moore for violating their trademark rights in his paintings, prints, calendars, mugs and other items. At trial, the judge ruled that use of trademarks in the paintings and prints was protected by the First Amendment (freedom of speech), but that the reproduction of these same paintings on other merchandise fell outside the scope of the First Amendment and would likely infringe the trademarks by causing consumer confusion.

The Court of Appeals ruled that the inclusion of the University’s trademarks in the paintings, prints and calendars was indeed protected by the First Amendment. The Court stated: “we conclude that the First Amendment interests in artistic expression so clearly outweigh whatever consumer confusion that might exist on these facts that we must necessarily conclude that there has been no violation of the Lanham Act with respect to the paintings, prints, and calendars.” The Court rejected the University’s arguments that the paintings, prints and calendars represented commercial speech, and were therefore entitled to a lower level of constitutional protection. According to the Court, the fact that the items were sold for money did not render them commercial speech. The Court ruled that trademark rights should be construed narrowly in the context of artistic works. It ruled that “[t]he depiction of the University’s uniforms in the content of these items is artistically relevant to the expressive underlying works because the uniform’s colors and designs are needed for a realistic portrayal of famous scenes from Alabama football history.”

Unfortunately, Moore did not appeal the decision of the lower court that the paintings on the mugs and other items (including t-shirts, towels and so on) fell outside first amendment protection. Instead, he argued that the University, through its conduct had acquiesced to the sale of this merchandise. The issue was remanded to the district court for further consideration. It would certainly have been interesting to have a ruling on the issue of whether a trademark owner could place limits on the right of an artist to sell copies of works featuring trademarks through a broad range of merchandising opportunities.

Although similar questions have not yet been raised in Canadian courts, the issues are important here as well.In 2007, the federal government enacted special legislation to give enhanced protection to Olympic and Paralympic trademarks. When concerns were raised about the impact the law might have on the freedom of expression of artists who might create works incorporating these well known marks, Parliament amended the law to include the following exception:

3(6) For greater certainty, the inclusion of an Olympic or Paralympic mark or a translation of it in any language in an artistic work, within the meaning of the Copyright Act, by the author of that work, is not in itself a use in connection with a business if the work is not reproduced on a commercial scale. [my emphasis]

The expression “for greater certainty” suggests that the provision is simply clarifying the law rather than creating a new exception. While the provision makes it clear that the protected trademarks may be incorporated into artistic works, those works only qualify for the exception if they are “not reproduced on a commercial scale.” This is a rather tricky phrase. It is not at all clear what the reproduction of an artistic work on a commercial scale would entail. A single painting offered for sale might be acceptable, but a numbered series of prints might not. Further, it might not be permissible for an artist to licence multiple unnumbered prints, or to publish his or her work in a calendar. While all of these uses of an artistic work would appear to be protected by the First Amendment in the United States, the Olympic and Paralympic Marks Act seems to codify a narrower scope for artistic expression. The question of mugs, t-shirts and other items featuring the artistic work is entirely unresolved.

Canadian courts have tended to take a narrow view of freedom of expression issues in intellectual property law. The Moore case in the United States is provocative for challenging the balance between the expressive rights of an artist whose work incorporates the trademarks of others and the rights of the trademark holder. It remains to be seen how a Canadian court will approach such a balancing act, and how, in consequence it might interpret such an ambiguous provision as s. 3(6) of the Olympic and Paralympic Marks Act.

Voltage Pictures LLC has brought a motion in Federal Court seeking a court order that would compel Internet Service Provider Teksavvy Solutions Inc. to disclose the identities of customers using certain IP addresses that have been linked to Internet file-sharing of works in which Voltage owns the copyright. If the court were to order the disclosure, the identified individuals could be sued for copyright infringement by Voltage.

The University of Ottawa’s Samuelson-Glushko Canadian Internet Policy and Public Interest Clinic (CIPPIC) has brought a motion to intervene in the proceedings. CIPPIC has an established track record in representing the public interest in cases of this kind; they have argued for a balance between individuals’ privacy interests in their online activities and copyright holders interests in previous litigation. The Federal Court has adjourned its hearing of Voltage’s motion in order to consider the issue of CIPPIC’s intervention.

A recent decision of the Federal Court has caused a small stir over language that, taken at face value, would have a dramatic impact on trademark law in Canada. In Homeaway.com, Inc. v. Hrdlicka, Justice Hughes considered an application to have the respondents registered trademark VRBO, for vacation real estate listing services, expunged from the register. The applicant was the owner of the U.S. based website VRBO.com, which offers vacation real estate listings on a worldwide basis. The applicant argued that the respondent’s trademark registration was invalid as Hrdlicka was not the person entitled to register the mark in Canada.

The person entitled to register a trademark in Canada is the one who has first used it or made it known in this country. The “making known” provision of the Trade-marks Act is designed to protect well-known foreign trademarks from being registered by Canadian businesses with the likely consequence of creating confusion among Canadian consumers already familiar with the foreign mark. Unfortunately, as Justice Hughes noted in his decision, the “making known” provisions were drafted in the technological dark ages and specifically refer to marks that have been made known through the print or broadcast media. Notwithstanding this, there is still hope for a foreign trademark owner that has actually used its trademark in Canada; if they were the first to use the mark in this country, then they are the party entitled to register it.

The Trade-marks Act contains a definition of “use” that varies depending on whether the mark is registered for wares or services. In this case, the VRBO mark related to services. For a mark to be used in relation to services, it must be “used or displayed in the performance or advertising of those services.” (s. 4(2)) The VRBO mark appears on the VRBO website and in its URL. However, the case law also makes it clear that for there to be use in Canada, it is not sufficient for there to be advertising featuring the mark in Canada, the services must also be offered in Canada.

This is where the decision of the Federal Court has caused confusion and controversy. In discussing “use”, Justice Hughes makes the apparently bold statement that “a trade-mark which appears on a computer screen website in Canada, regardless where the information may have originated from or be stored, constitutes for Trade-marks Act purposes, use and advertising in Canada.” (at para 22) On the one hand, the statement offers nothing particularly surprising – it is not controversial to find that use on a website can constitute “advertising” for the purposes of determining use in relation to services under s. 4(2). However, the statement falls short in that it fails to clarify that this finding is limited to use in relation to services; a mark being featured on a web site is, on its own, not a use in relation to wares. Further, the statement appears to conflate the issue of whether featuring a mark on a website is advertising with the broader issue of whether a trademark has been used in Canada. As noted earlier, the person entitled to register the mark is the person who has first used the mark in Canada, and the case law is clear that for this to happen the services in question must not just be advertised in Canada – they must also be offered in Canada.

Although the statement taken at face value is controversial, the decision in the case is not particularly troubling. Indeed, Justice Hughes is aware of the importance of the services being offered in Canada, even though he does not refer to the relevant case law. He finds that HomeAway not only advertised its services in Canada, it entered into contracts with Canadians to list their vacation properties, and the site was used by Canadians to find vacation rental properties. It is just unfortunate that the rather elliptical way in which the decision was framed can lead to the impression that a trademark will be considered to be “used” in Canada simply by virtue of the fact that it can be seen on websites accessible to Canadians over the Internet. This is certainly not true in the case of wares, and is only true, in the case of services, if the services are also genuinely available to Canadians.